Plaintiff NanoChem Solutions, Inc ("NC") brings this action against defendants Global Green Products, LLC ("GGP") and Larry P. Koskan for patent infringement arising under 35 U.S.C. § 271 (Counts I through V), unfair competition under the Lanham Act, 15 U.S.C. § 1125(a) (Count VI), and unfair competition under Illinois law (Count VII).Presently pending are cross motions for summary judgment as to Counts VI and VII. Also pending defendants' motion in limine to bar evidence of damages. Discovery was completed and closed. Defendants' motion for partial summary judgment as to certain patent claims was previously denied. See Nanochem Solutions, Inc. v. Global Green Prods., LLC, 2012 WL 5048064 (N.D. Ill. Oct. 16, 2012). A claim construction ruling has also been issued. See Nanochem Solutions, Inc. v. Global Green Prods., LLC, 2013 WL 393302 (N.D. Ill. Jan. 29, 2013).
Previously, plaintiff had represented it would also seek patent damages based on a reasonable royalty, but is now relying only on lost profits. Plaintiff has now disclosed its damages calculation and that calculation is limited to lost profits. Plaintiff will be limited to seeking damages consistent with that disclosure. Even if there was a violation of Rule 26(a) and 26(e)(1)(A) because the supplemental disclosure was not timely, the calculation will not be excluded if any delay was substantially justified or harmless. Fed. R. Civ. P. 37(c)(1); Smith v. Ill. Ass'n of Sch. Bd., 2012 WL 895426 *2 (S.D. Ill. March 15, 2012); Compak Cos., LLC v. Johnson, 2011 WL 1654269 *17 (N.D. Ill. April 28, 2011).
Plaintiff contends a Lanham Act claim is shown even if A-5D is not a distinctive mark because of long use and, alternatively, that A-5D is a distinctive mark. Accordingly, it contends it need not show secondary meaning or commercial injury. The parties also have disagreements regarding what the evidence shows regarding certain of GGP's compounding of A-5D. It is unnecessary to determine whether either side's factual contentions regarding GGP's conduct are supported by undisputed facts or instead involve genuine factual disputes that must be resolved differently for each side's summary judgment motion. In order to succeed on its reverse passing off contentions, plaintiff must show that A-5D is a distinctive mark or has secondary meaning. Undisputed facts support that neither is true.
In Bretford Mfg., Inc. v. Smith Sys. Mfg. Corp., 419 F.3d 576, 579-80 (7th Cir. 2005),the Seventh Circuit held that the Lanham Act reverse passing off claims in that case required proof of inherent distinctiveness or secondary meaning. Plaintiff attempts to distinguish Bretford on the ground that it involves trade dress, not a trademark. However, the discussion in Bretford is not limited to trade dress.
A later Seventh Circuit case involving reverse confusion supports that the distinctiveness requirement applies for reverse passing off trademark claims as well. See Custom Vehicles, Inc. v. Forest River, Inc., 476 F.3d 483-85 (7th Cir. 2007); see also Peaceable Planet, Inc. v. Ty, Inc.,362 F.3d 986 (7th Cir. 2004). At least one district court case from another circuit has held in the alternative that the distinctiveness requirement applies to reverse passing off trademark claims. See Impreglon, Inc. v. Newco Enterprises, Inc., 508 F. Supp. 2d 1222, 1241 n.18 (N.D. Ga. 2007).
Plaintiff also cites Web Printing Controls Co., Inc. v. Oxy-Dry Corp., 906 F.2d 1202 (7th Cir. 1990). While not listing distinctiveness as an element of a reverse passing off claim, this case also does not expressly address that issue. Unlike the present case,Web Printing involved a registered trademark that had been used for years, see id. at 1203, which is presumed to be distinctive or to have secondary meaning. See Custom Vehicles, supra; Timelines, Inc. v. Facebook, Inc., 2013 WL 1340598 *9 (N.D. Ill. April 1, 2013).
The parties shall promptly meet and make a concerted effort to settle the remaining issues in this case. Absent a resolution by settlement, the final pretrial order is due on the date set forth below. The pretrial order is to be filed electronically with a paper judge's copy brought to court on the date set forth below.
IT IS THEREFORE ORDERED AS FOLLOWS:
Defendants' motion in limine to bar damage evidence [192] is granted in part and denied in part. Plaintiff's damages are limited to lost profits.
Plaintiff's motion for summary judgment [186] is denied. Defendants' cross motion for summary judgment [195] is granted. Counts VI and VII of the Second Amended Complaint are dismissed.
On October 17, 2013 at 2:00 p.m., the parties shall submit a judge's copy of a final pretrial order in full compliance with Local Rule 16.1 and Local Rule Form 16.1.1, including trial briefs, proposed voir dire questions, motions in limine with supporting briefs, and proposed jury instructions.
NANOCHEM SOLUTIONS, INC., Plaintiff,
v.
GLOBAL GREEN PRODUCTS, LLC, and LARRY P. KOSKAN, Defendants,
Plaintiff contends a Lanham Act claim is shown even if A-5D is not a distinctive mark because of long use and, alternatively, that A-5D is a distinctive mark. Accordingly, it contends it need not show secondary meaning or commercial injury. The parties also have disagreements regarding what the evidence shows regarding certain of GGP's compounding of A-5D. It is unnecessary to determine whether either side's factual contentions regarding GGP's conduct are supported by undisputed facts or instead involve genuine factual disputes that must be resolved differently for each side's summary judgment motion. In order to succeed on its reverse passing off contentions, plaintiff must show that A-5D is a distinctive mark or has secondary meaning. Undisputed facts support that neither is true.
In Bretford Mfg., Inc. v. Smith Sys. Mfg. Corp., 419 F.3d 576, 579-80 (7th Cir. 2005),the Seventh Circuit held that the Lanham Act reverse passing off claims in that case required proof of inherent distinctiveness or secondary meaning. Plaintiff attempts to distinguish Bretford on the ground that it involves trade dress, not a trademark. However, the discussion in Bretford is not limited to trade dress.
A later Seventh Circuit case involving reverse confusion supports that the distinctiveness requirement applies for reverse passing off trademark claims as well. See Custom Vehicles, Inc. v. Forest River, Inc., 476 F.3d 483-85 (7th Cir. 2007); see also Peaceable Planet, Inc. v. Ty, Inc.,362 F.3d 986 (7th Cir. 2004). At least one district court case from another circuit has held in the alternative that the distinctiveness requirement applies to reverse passing off trademark claims. See Impreglon, Inc. v. Newco Enterprises, Inc., 508 F. Supp. 2d 1222, 1241 n.18 (N.D. Ga. 2007).
Plaintiff also cites Web Printing Controls Co., Inc. v. Oxy-Dry Corp., 906 F.2d 1202 (7th Cir. 1990). While not listing distinctiveness as an element of a reverse passing off claim, this case also does not expressly address that issue. Unlike the present case,Web Printing involved a registered trademark that had been used for years, see id. at 1203, which is presumed to be distinctive or to have secondary meaning. See Custom Vehicles, supra; Timelines, Inc. v. Facebook, Inc., 2013 WL 1340598 *9 (N.D. Ill. April 1, 2013).
The parties shall promptly meet and make a concerted effort to settle the remaining issues in this case. Absent a resolution by settlement, the final pretrial order is due on the date set forth below. The pretrial order is to be filed electronically with a paper judge's copy brought to court on the date set forth below.
IT IS THEREFORE ORDERED AS FOLLOWS:
Defendants' motion in limine to bar damage evidence [192] is granted in part and denied in part. Plaintiff's damages are limited to lost profits.
Plaintiff's motion for summary judgment [186] is denied. Defendants' cross motion for summary judgment [195] is granted. Counts VI and VII of the Second Amended Complaint are dismissed.
On October 17, 2013 at 2:00 p.m., the parties shall submit a judge's copy of a final pretrial order in full compliance with Local Rule 16.1 and Local Rule Form 16.1.1, including trial briefs, proposed voir dire questions, motions in limine with supporting briefs, and proposed jury instructions.
United States District Court, N.D. Illinois, Eastern Division.
